Rijckaert, In re

• Citation: 28 USPQ2d 1955,9 F.3d 1531
• Decision Date: 23 November 1993
• Docket Number: No. 93-1206,93-1206
• Parties: In re Albert M.A. RIJCKAERT and Joannes A.E. Van Der Kop.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1531

9 F.3d 1531

28 U.S.P.Q.2d 1955

In re Albert M.A. RIJCKAERT and Joannes A.E. Van Der Kop.

No. 93-1206.

United States Court of Appeals, Federal Circuit.

Nov. 23, 1993.

Edward W. Goodman, North American Philips Corp., of Tarrytown, NY, argued for appellant. With him on the brief was Algy Tamoshunas.

Lee E. Barrett, Associate Sol., Office of the Sol., Arlington, VA, argued for appellee. With him on the brief was Fred E. McKelvey, Sol.

Before MAYER and LOURIE, Circuit Judges, and LAY ^*, Senior Circuit Judge.

LOURIE, Circuit Judge.

Albert Rijckaert and Joannes van der Kop ("Rijckaert") appeal from the decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences affirming the final rejection of claims 5-12, all of the pending claims in patent application serial no. 07/345,396, as being unpatentable under 35 U.S.C. § 103 (1988). Because the references relied upon to reject

the claims do not provide the basis for a prima facie determination that the claimed invention would have been obvious, we reverse.

BACKGROUND

The patent application at issue relates to an apparatus for recording and reproducing an electric signal on a magnetic record carrier. Independent claim 11 is drawn to a recording apparatus and it specifies a relationship between time expansion or compression and three variables, , n, and M. Claim 11 reads, in pertinent part:

11. An apparatus for recording an electric signal on a magnetic record carrier in tracks which are inclined relative to the longitudinal direction of said record carrier, comprising: ...

....

... [a] time-base correction circuit provid[ing] a time expansion or time compression of the signal blocks by a factor of *n/(180*(M+1)), where is the wrapping angle of the record carrier around the head drum and differs from 180? , n is the number of head pairs, and M is the number of times within a specific time interval that a head pair which comes in contact with the record carrier during said time interval does not record a signal on the record carrier, said time interval being defined by those instants at which two consecutive track pairs are recorded by one or two head pairs.

Independent claim 12 is drawn to an apparatus for reproducing a recorded signal and it recites the reciprocal relationship between time compression or expansion and the three variables , and M. Dependent claims 5-10 further limit claims 11 or 12.

The Board upheld the final rejection of claims 5 and 7-12 under 35 U.S.C. § 103 as being unpatentable over U.S. Patent 4,757,392 to Awamoto in view of Driessen et al., An Experimental Digital Video Recording System, CE-32 I.E.E.E. Transactions on Consumer Electronics 3, Aug. 1986, at 362-70. The Board also upheld the final rejection of claim 6 as being unpatentable over Awamoto and Driessen in view of U.S. Patent 4,542,417 to Ohta.

DISCUSSION

We review de novo the Board's ultimate determination of obviousness. In re De Blauwe, 736 F.2d 699, 703, 222 USPQ 191, 195 (Fed.Cir.1984). Underlying factual inquiries, such as the scope and content of the prior art, differences between the prior art and the claimed invention, and level of ordinary skill in the art are reviewed for clear error. See In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985).

In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.Cir.1992). Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant. Id. "A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed.Cir.1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). If the examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.Cir.1988).

All of the claims except claim 6 stand rejected under 35 U.S.C. § 103 as being obvious over Awamoto in view of Driessen. ¹ Awamoto, the primary reference, discloses a signal processing circuit for a video recording and reproducing apparatus. Awamoto specifically discloses the time expansion of an input signal by a factor of two and the corresponding time compression of an output signal in a manner inverse to that of the time expansion. Further, Awamoto uses two video heads mounted on a rotary drum "of any The Board concluded that the subject matter of the claims would have been obvious over Awamoto in view of Driessen, stating that "the time expansion or time compression relationship is satisfied for the expansion of two disclosed [in] Awamoto when a wrapping angle of 360? , one pair of heads and no non-recording intervals are assumed." The Board further asserted that the recognition of the claimed relationship between time expansion/compression and the three variables a, n, and M is "the mere discovery of a relationship that is applicable to [a] prior art apparatus[, and] does not [give] rise to a patentable invention." Thus, in affirming the rejection, the Board first assumed that the claim limitation at issue, the relationship between time expansion/compression and the three variables, was somehow "inherent" in the prior art as shown by Awamoto. The Board also assumed specific values for the claimed variables in order to assert that Awamoto's device satisfies the claimed relationship.

                of a well known video tape loading mechanism such that [the heads] follow parallel tracks skewed relative to the length of video tape."   Driessen discloses a recording system using two pairs of heads mounted on piezo-ceramic actuators
                

Rijckaert argues that the examiner has not established a prima facie case of obviousness and that the examiner's assumptions do not constitute the disclosure of prior art. We agree. Awamoto does not disclose the wrapping angle of the record carrier around the head drum or the number of times that a head pair which comes in contact with the record carrier does not record a signal on the record carrier. Nor does Awamoto discuss the claimed relationship of the three variables to time...